T 1038/18 - (III) Fresh grounds in appeal

 Key points

•  “The appellant [opponent] submitted during the appeal proceedings that the subject-matter of claim 1 of auxiliary request 3 resulted in an unallowable generalisation of the content of the application as filed (Article 123(2) EPC).”
• “The respondent [patentee] submitted that the appellant's objection under Article 123(2) EPC amounted to the introduction of the ground for opposition under Article 100(c) EPC and that they did not give their consent to the introduction of this ground for opposition.”
• Art. 100(c) was not invoked in the Notice of opposition, nor introduced by the OD. Hence, G 10/91 applies.
• “The board notes that the opposition was only based on the grounds for opposition under Articles 100(a) and 100(b) EPC (cf. point I above, second paragraph), that claim 1 only results from the combination of claims as granted (see point 6.1.1 above, first paragraph), and that therefore - as submitted by the respondent - the appellant's objection under Article 123(2) EPC amounts to an objection under Article 100(c) EPC in respect of the corresponding claims as granted and therefore to the introduction of a ground for opposition neither invoked by the appellant in the notice of opposition, nor introduced by the opposition division during the first-instance proceedings. In these circumstances, and in view of the fact that the respondent did not consent to the introduction of the ground for opposition under Article 100(c) EPC, the mentioned objection cannot be considered by the board (see G 10/91 [headnote 3])”
• I recall that G 10/91 r.19 stated that: “In order to avoid any misunderstanding, it should finally be confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of Article 123(2) and (3) EPC)”. 
• As this present decision illustrates, this must be applied in the same way as for G 3/14: does the amendment introduce a new (alleged) deficiency into the claims? See also T 0895/18 for a different (in my view, incorrect) approach. 

T 1038/18 

 

https://www.epo.org/law-practice/case-law-appeals/recent/t181038eu1.html

6.1.2 The appellant [opponent] submitted during the appeal proceedings that the subject-matter of claim 1 of auxiliary request 3 resulted in an unallowable generalisation of the content of the application as filed (Article 123(2) EPC).

The respondent submitted that the appellant's objection under Article 123(2) EPC amounted to the introduction of the ground for opposition under Article 100(c) EPC and that they did not give their consent to the introduction of this ground for opposition.

The board notes that the opposition was only based on the grounds for opposition under Articles 100(a) and 100(b) EPC (cf. point I above, second paragraph), that claim 1 only results from the combination of claims as granted (see point 6.1.1 above, first paragraph), and that therefore - as submitted by the respondent - the appellant's objection under Article 123(2) EPC amounts to an objection under Article 100(c) EPC in respect of the corresponding claims as granted and therefore to the introduction of a ground for opposition neither invoked by the appellant in the notice of opposition, nor introduced by the opposition division during the first-instance proceedings. In these circumstances, and in view of the fact that the respondent did not consent to the introduction of the ground for opposition under Article 100(c) EPC, the mentioned objection cannot be considered by the board (see G 10/91 (OJ EPO 1993, 420), point 3 of the Opinion).